The UK IPO will now be providing advance notice of grant to applicants. They will be issuing a communication informing an applicant that his/her application meets all requirements and will therefore proceed to grant. This will typically be 1 month’s notice, but 2 months’ if issued as the first examination report (as currently is the case).
This will bring the UK procedure closer in line with the familiar Rule 71(3) EPC procedure at the EPO. Importantly, the change will give applicants a guaranteed period to decide whether to file a divisional application before the “allowed” application grants, and so stop divisional “foreshadowing” i.e. raising the possibility to the examiner that a divisional application might be of interest in a response to an examination report, and asking for time to decide before they grant the case.
Simplification of the time period for requesting reinstatement.
The only deadline for requesting reinstatement of a terminated patent application will be 12 months from termination of the patent application.
Thus, from 1 October, reinstatement can be requested on applications that have terminated in the previous 12 months.
Allowance of extensions to the period for providing an address for service.
2 month extensions will now be available for providing an address for service in the EEA or Channel Islands. Request this, as one usually would for a prescribed period, by filing Patents Form 52 and paying the £135 fee. Currently the period is 2 months after direction from the comptroller to provide an address, and is non-extendable.
Relaxation of the requirements for formal drawings.
Shading will now be allowed in drawings, provided it does not obscure other parts of the drawing. Black and white photos will also be permitted, as long as they are clear and reproducible. Drawings that are not suitable for publication will still be rejected.
Clarification of when amendments to a PCT entering the UK national phase can be made.
There are two scenarios, depending on whether the international search report (ISR) has been issued by the time the application enters the UK national phase. If it has, voluntary amendments may be made from the time of entry up until the first examination report is issued. If it hasn’t, voluntary amendments can be made from when the first of the ISR or UK search report is issued, and again up until the first examination report is issued.
Clarification of requirements concerning changes of names and addresses.
The requirements for updating previously correct name and/or address information are being clarified.
|The rules have never really applied to Merpel...|
Patents Form 20 will now include a new tick box, so that it can be specified whether an error is being corrected, or the information is being updated.
Discretion over advertisement of amendments during infringement or revocation proceedings.
The legislation is being clarified to reflect that the UK IPO has discretion over whether to advertise amendments during proceedings, for example where the proprietor requests amendment(s) to the patent to avoid revocation.
Guidance on the
factors that will be considered when deciding whether to advertise will appear
in the Manual of Patent Practice. Generally, an amendment that is so
insignificant, such that it could not be expected that anyone would oppose it,
would not be advertised. However, amendments being made to avoid revocation are
likely to be significant, and so would be advertised.
Removal of certain requirements for multiple copies of documents.
Duplicate copies of the form for appointing/changing a patent attorney (Form 51) will no longer be required. Nor will triplicate copies of PCT applications be required when using the UK IPO as the receiving office.
Changes from 6 April 2017
Allowability of omnibus claims.
Omnibus claims – aka the easiest claims ever drafted – will (generally) no longer be allowed.
These claims typically take a form such as “A [product / process] substantially as described herein with reference to the accompanying drawings” and so do not recite explicit technical features of the invention, but instead refer to the description and/or drawings. The EPO and USPTO will generally object to this type of claim, but the UK IPO has historically been lenient, and the practice of including omnibus claims has become a bit of quirk peculiar to the UK and a few other countries. (Australia used to permit them but has also recently banned their use under most circumstances; New Zealand still allows them.)
Removal of requirement to annually update the UKIPO with an address for renewal reminders
This administrative burden is being scrapped. Where the address for renewal reminders differs from the registered address for service, it will no longer be necessary to update the UK IPO annually with the address to be used. Instead, the UK IPO will simply use the last one provided, until they are told otherwise.
This Kat would like to thank his colleague at EIP Daniel Richards for his help in summarising these changes.